Anan Kasei Co, Ltd Rhodia Opérations SAS v Molycorp Chemicals & Oxides (Europe) Ltd, Court of Appeal - Patents Court, July 14, 2016, [2016] EWHC 1722 (Pat)

Resolution Date:July 14, 2016
Issuing Organization:Patents Court
Actores:Anan Kasei Co, Ltd Rhodia Opérations SAS v Molycorp Chemicals & Oxides (Europe) Ltd
 
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Case No: HP-2016-000018

Neutral Citation Number: [2016] EWHC 1722 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Rolls Building

Fetter Lane, London EC4A 1NL

Date: 14 July 2016

Before :

MR JUSTICE ARNOLD

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Between :

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Thomas Raphael QC, Thomas Mitcheson QC and Miles Copeland (instructed by Hogan Lovells International LLP) for the Claimants

Hugo Cuddigan QC (instructed by Bird & Bird LLP) for the Defendant

Hearing date: 8 July

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JudgmentMR JUSTICE ARNOLD :

Introduction

  1. The First Claimant is the proprietor of European Patent No. 1 435 338 entitled ``Ceric oxide and method for production thereof, and catalyst for exhaust gas clarification'' (``the Patent''), which is designated in respect of Belgium, France, Germany, Italy and the United Kingdom. The Second Claimant is the exclusive licensee in respect of (at least) the German and UK designations. Claim 1 of the Patent is directed to ceric oxide having a specific surface area of not smaller than 30.0 m2/g when subjected to calcination at 900oC for five hours.

  2. On 13 April 2016 the Claimants (``Rhodia'') commenced proceedings in this Court alleging that the Defendant (``Molycorp'') had infringed the UK and German designations of the Patent. It is common ground that Molycorp is domiciled within the UK, or more specifically England.

  3. On 27 April 2016 Molycorp's solicitors filed an acknowledgement of service indicating that Molycorp intended to defend the claim, but not that it intended to challenge the jurisdiction of this Court. On the same day, however, Molycorp's solicitors wrote to Rhodia's solicitors stating that Molycorp intended to challenge the validity of the German designation of the Patent before the German courts and asserting that in those circumstances this Court would no longer have jurisdiction to entertain the claim for infringement of the German designation of the Patent.

  4. On 17 May 2016 Rhodia's solicitors wrote to Molycorp's solicitors suggesting that the parties agree that the English courts should determine infringement and validity of the UK designation of the Patent and infringement of the German designation and that the English courts' conclusions as to the validity of the UK designation should apply equally to the German designation. Molycorp's solicitors did not respond to this suggestion, and Molycorp can be taken to have rejected it.

  5. On 2 June 2016 Rhodia issued and served an application seeking directions for the conduct of the matter, and in particular for the fixing of the trial date and for an order pursuant to CPR rule 25(1)(c)(iii) and (iv) for the provision by Molycorp of samples of its ceric oxide products for testing by an independent laboratory instructed on behalf of Rhodia for the purposes of Rhodia's claims for infringement of both the UK designation and the German designation of the Patent.

  6. On 21 June 2016 Molycorp issued nullity proceedings in the Bundespatentgericht (Federal Patent Court) challenging the validity of the German designation of the Patent on the grounds of lack of novelty over five items of prior art, lack of inventive step over a further item of prior art and insufficiency. It is common ground that the determination of the nullity proceedings at first instance is likely to take about two years.

  7. On 23 June 2016 Rhodia's application came before me, together with an application by Molycorp for an extension of time for the service of its Defence and Counterclaim. Counsel for Molycorp asserted in his skeleton argument that this Court no longer had jurisdiction over the claim for infringement of the German designation. Counsel for Rhodia declined to accept that that was so. Furthermore, he intimated that, even if this Court no longer had jurisdiction over the claim for infringement of the German designation, Rhodia would still wish to pursue its application for an order for the provision of samples by Molycorp for testing for the purposes of a claim for infringement which Rhodia would bring in the German courts in that event. Accordingly, I directed a hearing to determine the issues of (1) whether this Court had jurisdiction over the claim in respect of the German designation and (2) whether an order should be made for the provision of samples for testing for the purposes of a claim by Rhodia in the German courts. In the meantime, I fixed the trial of these proceedings for mid May 2017, granted Molycorp a short extension of time and ordered Molycorp to provide samples for testing for the purposes of the claim for infringement of the UK designation.

  8. On 30 June 2016 Rhodia applied to amend its Particulars of Claim and Particulars of Infringement in the manner described below, although the amendments were slightly modified at the outset of the hearing.

  9. On 1 July 2016 Molycorp served its Defence and Counterclaim together with Grounds of Invalidity. In paragraph 5 of the Defence Molycorp pleaded that it had challenged the validity of the German designation in the Federal Patent Court and that, if it was necessary for it to do so in these proceedings, it did so upon the grounds raised in the nullity proceedings. Molycorp went on to deny infringement of the UK designation and to challenge the validity of the UK designation on the grounds set out in its Grounds of Invalidity, namely lack of novelty, alternatively lack of inventive step, over three of the items of prior art cited in the nullity proceedings.

  10. On 8 July 2016 I heard argument on the two issues identified in paragraph 7 above. Both sides served expert evidence of German patent law and procedure without seeking or obtaining the Court's permission to do so. I will grant them permission to adduce that evidence, which I have read and found informative. As will appear, however, I consider that the resolution of the issues depends on questions of European and English law rather than German law or procedure.

    Issue 1: Does this Court have jurisdiction over the claim in respect of the German designation of the Patent?

  11. Counsel for Rhodia did not dispute that this Court had no jurisdiction over the claim for infringement of the German designation originally advanced in Rhodia's Particulars of Claim and Particulars of Infringement. He nevertheless submitted that this Court did have jurisdiction over the claim in respect of the German designation advanced in Rhodia's proposed amended Particulars of Claim and Particulars of Infringement.

  12. Counsel for Molycorp submitted that this Court did not have jurisdiction over the claim in respect of the German designation advanced in Rhodia's proposed amended Particulars of Claim and Particulars of Infringement. He did not oppose Rhodia's application to amend the Particulars of Claim and Particulars of Infringement on any other ground.

  13. Although the proposed amendments are considerably more extensive, their essence can be seen from the amendments to paragraph 4 of, and paragraph (1) of the prayer for relief in, the Particulars of Claim:

    ``4. The Defendant has infringed the UK and German designations of the Patent as set out in the Particulars of Infringement served herewith. In respect of the German designation of the Patent, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed, and/or would fall within the scope of the claims of, the German designation of the Patent.

    (1) A declaration that each of the UK and German designations of the Patent has been infringed by the Defendant.

    (1A) A declaration that, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed the German designation of the Patent. Alternatively, a declaration that the Defendant's conduct falls within the scope of the claims of the German designation of the Patent (if not found invalid, which is to be determined by the German courts).''

  14. The issue as to jurisdiction turns on the interpretation and application of Articles 24(4) and 27 of European Parliament and Council Regulation 1215/2012/EU of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) (``the Recast Brussels I Regulation''). Articles 24(4) and 27 provide as follows:

    ``Article 24

    The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:

    ...

    (4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.

    Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member...

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